Abbott Laboratories v. Namepro LLC d/b/a Namepro.eu
Claim Number: FA1012001365540
Complainant is Abbott Laboratories (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Namepro LLC d/b/a Namepro.eu (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simliac.com>, registered with Paknic (Private) Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2010; the National Arbitration Forum received payment on January 10, 2011.
On December 31, 2010, Paknic (Private) Limited confirmed by e-mail to the National Arbitration Forum that the <simliac.com> domain name is registered with Paknic (Private) Limited and that Respondent is the current registrant of the names. Paknic (Private) Limited has verified that Respondent is bound by the Paknic (Private) Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@simliac.com. Also on January 11, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a global company which provides a wide array of products for humans and animals, one those being an infant formula called SIMILAC.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,465,112, issued July 3, 2001) for its SIMILAC mark.
Respondent registered the <simliac.com> domain name on September 5, 2007.
The disputed domain name resolves to a pay-per-click website offering links to third-party websites both of Complainant’s commercial competitors and sites of organizations unrelated to Complainant’s business.
Respondent’s <simliac.com> domain name is confusingly similar to Complainant’s SIMILAC mark.
Respondent is not commonly known by the <simliac.com> domain name.
Respondent uses the SIMILAC mark without consent from Complainant.
Respondent does not operate a business or other organization under such mark and does not own any trademark or service mark rights in the SIMILAC name.
Respondent does not have any rights to or legitimate interests in the domain name <simliac.com>.
Respondent registered and uses the <simliac.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the SIMILAC trademark pursuant to Policy ¶ 4(a)(i)) by registering it with a national trademark authority, the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that a complainant’s national trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark for purposes of the Policy; see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s <simliac.com> domain name is confusingly similar to Complainant’s SIMILAC trademark. The disputed domain name includes the entirety of the mark while only rearranging the letters to form a common misspelling of the word SIMILAC and adding the generic top-level domain (“gTLD”) “.com.” These differences fail to differentiate the disputed domain name from Complainant’s SIMILAC under the standards enforced under the Policy. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to a complainant’s GOOGLE mark and noting that:
[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error.
See also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
The Panel therefore finds that the requirements of Policy ¶ 4(a)(i) have been met.
In order to prevail under this head of the Policy, Complainant must make out a prima facie case that Respondent lacks rights to or legitimate interests in the contested domain name. Respondent then has the burden of proving that it nonetheless has rights to or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name.
If, however, Respondent fails to file a response to a complaint filed under the Policy, we may presume that it does not have any rights to or legitimate interests in the domain name formed from Complainant’s competing mark. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
Complainant has met its burden of proof by making out a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain name, while Respondent, for its part, has failed to respond to the allegations of the Complaint filed in this proceeding. Notwithstanding Respondent’s default, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <simliac.com> domain name, that Respondent uses the SIMILAC mark without consent from Complainant, and that Respondent does not operate a business or other organization under such mark and does not own any trademark or service mark rights in the SIMILAC name. Respondent has offered no evidence to the contrary. Moreover, the pertinent WHOIS information identifies the registrant of the contested domain only as “Namepro LLC DBA Namepro.eu,” which does not resemble the contested domain name. On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the disputed domain under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the relevant WHOIS information and other evidence in the record); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark).
We also observe that Complaint contends, without objection from Respondent, that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <simliac.com> domain name. In this connection, Respondent’s domain name evidently resolves to a pay-per-click site offering links to third-party sites of Complainant’s commercial competitors and sites unrelated to Complainant. Using the resolving site to offer links to Complainant’s competitors and third-parties unrelated to Complainant as a pay-per-click service does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a contested domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that a respondent had no rights to or legitimate interests in a contested domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii) where it was used to operate a website featuring links to websites offering goods and services unrelated to a complainant); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Respondent’s <simliac.com> domain name disrupts Complainant’s business by redirecting Internet users to a site offering links to its commercial competitors, which constitutes evidence of bad faith registration and use of the domain under Poilcy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used a disputed domain name to operate a commercial search engine with links to a complainant’s competitors).
Respondent uses the <simliac.com> domain name for its own commercial gain, constituting bad faith registration and use by reason of the pay-per-click site from which it presumably collects revenue. This is evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to a complainant’s mark to offer links to third-party websites featuring services similar to those offered by that complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using disputed domain names to operate a search engine with links to the products of a complainant and those of that complainant’s commercial competitors, as well as by diverting Internet users to several other domain names).
For these reasons, the Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <simliac.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 10, 2011
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